Ex Parte Rein et al

Board of Patent Appeals and Interferences

Apr 16, 2008

10718438 (B.P.A.I. Apr. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte WOLFGANG REIN and JONATHAN DOUGLAS
_____________

Appeal 2008-0296
Application 10/718,438
Technology Center 3700
____________

Decided: April 16, 2008
_______________

Before TERRY J. OWENS, DAVID B. WALKER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal from a rejection of claims 1-20, which are all
of the pending claims.
THE INVENTION
The Appellants claim a piston and connecting rod assembly. Claim 1
is illustrative:

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1. A piston and connecting rod assembly for use with an
internal combustion engine, said assembly comprising:

a piston adapted for reciprocal movement within a
cylinder of the internal combustion engine, said piston having a
body including a pin bore formed therein;

a connecting rod adapted to interconnect said piston and
a crankshaft so as to translate the reciprocal movement of the
piston into rotational movement of the crankshaft, said
connecting rod having first and second ends with at least one of
said ends including a bore extending therethrough and adapted
to be aligned with said pin bore in said piston;

a pin adapted to be operatively received through said
aligned pin bore in said piston and said bore extending through
said end of said connecting rod, said pin including a pair of
distal ends, a center portion formed therebetween and a
smoothly profiled outer circumference that is substantially
circular in cross-section with a larger diameter at said distal
ends than at said center portion and tapers gradually from said
distal ends to said center portions; and

said end of said connecting rod aligned with said piston
pin bore including a phosphatized coating that is adapted to
facilitate relative angular movement between said bore
extending through said connecting rod and said outer
circumference of said profiled piston pin thereby facilitating
reciprocal motion of said piston relative to the cylinder of an
internal combustion engine, said phosphatized coating having a
thickness between two and less than eight microns.

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THE REFERENCES
References relied upon by the Examiner
Fangman US 3,479,929 Nov. 25, 1969
DeBiasse US 4,984,544 Jan. 15, 1991
Lindstrom US 5,039,285 Aug. 13, 1991
Arai (JP ‘063) JP 04-000063 Jan. 6, 1992
(as translated)
Hart US 6,557,457 B1 May 6, 2003

Reference relied upon by the Appellants

Uehara US 6,769,518 B2 Aug. 3, 2004
(§ 371 (c)(1), (2), (4) date Oct. 30, 2002)

THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, 4-8, 11-13, 15 and 16 over JP ‘063 in view of Hart; claims 3, 9 and 18-20
over JP ‘063 in view of Hart and Lindstrom; claims 10 and 14 over JP ‘063
in view of Hart and Fangman; and claim 17 over JP ‘063 in view of Hart and
DeBiasse.
OPINION
We affirm the Examiner’s rejections.
Rejection of claims 1, 2, 4-8, 11-13, 15 and 16
over JP ‘063 in view of Hart
JP ‘063 discloses a piston pin (1) comprising a cylindrical central
area (4) having at each end thereof an outwardly-flared end (5, 6) that
matches the taper of a pin boss (2a) which it engages (p. 2; fig. 1). Piston
pin 1 is a two-piece pin (p. 1). The first piece comprises central area 4, a
tapered end (5) at one end of central area 4, and a shaft (8) at the other end

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of central area 4 (p. 4). The second piece is a tapered end member (1B) that
is press-fit onto shaft 8 (p. 4, fig. 1). Central area 4 fits within the bore of
the smaller end (3a) of a connecting rod (3), and there is what appears to be
a bushing between central area 4 and that bore. See id.
Hart discloses, for heavy duty diesel applications, a wrist piston (32)
between aligned bores (20, 28) of a piston body (12) and a connecting
rod (24) (col. 1, ll. 14-15; col. 2, ll. 38-40). To provide the necessary
tribological properties of the assembly without the usual bushing, either 1) at
least one of the wrist pin 32 running surface (34) and the connecting rod 24
running surface (30), or 2) at least one of the wrist pin 32 running surface 34
and the piston body 12 running surface (22), are coated with a coating (36)
that preferably is manganese phosphate and preferably has a thickness of
about 8.0 to 15.0 µm (col. 2, ll. 48-59; col. 3, ll. 9-12; col. 3, ll. 46-49).
Elimination of the bushing eliminates concerns for mechanical (e.g.,
abrasion), chemical (e.g., corrosion) and temperature limitations of the usual
bushings (col. 2, l. 62 – col. 3, l. 6). The coating is fairly open and porous
and has a coarse crystalline structure which absorbs and traps lubricating oil
to act as a solid lubricant under boundary lubrication conditions (i.e., low
load) and to develop a desirable stiff lubricant squeeze film between the
running surfaces of wrist pin 32 and connecting rod 24 under heavy load
(col. 3, ll. 13-23).
The Appellants argue that JP ‘063 does not disclose or suggest a
piston pin having a smoothly profiled outer circumference that tapers
gradually from the distal ends to the center portion (Br. 11).

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During patent prosecution, claims are to be given their broadest
reasonable interpretation consistent with the Specification, as the claim
language would have been read by one of ordinary skill in the art in view of
the Specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
The Appellants’ original disclosure does not state that the piston pin
has a smoothly profiled outer circumference that tapers gradually from the
distal ends to the center portion. That claim limitation was added by
amendment (filed April 14, 2005). The Appellants’ original Specification
states:
The pin includes a pair of distal ends, a center portion formed
therebetween and a profiled outer circumference that is substantially
circular in cross-section with a larger diameter at the distal ends than
at the center portion [¶ 0012].
* * *
[A]s shown in Figure 3, the preferred embodiment of the piston pin 26
of the present invention includes a profiled outer circumference that is
substantially circular in cross-section with a larger diameter at the
distal ends 56, 58 than at the center portion 60 [¶ 0032].

The piston pin in the Appellants’ figure 3 has an abrupt change from
cylindrical center portion (60) to outwardly-flared, non-curved distal ends
(56, 58).
Thus, when the “smoothly profiled outer circumference” and “tapers
gradually” language in the Appellants’ claims is given its broadest
reasonable interpretation consistent with the original disclosure, that
language encompass the JP ‘063 piston pin having cylindrical central area 4
with outwardly-flared tapered ends 5, 1B.

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The Appellants argue that JP ‘063 does not disclose or suggest a
phosphatized coating and an internal gallery, and Hart does not disclose or
suggest a smoothly profiled piston pin that gradually tapers from the distal
ends to the center portion (Br. 11-13).
The Appellants’ argument is deficient in that the Appellants are
attacking the references individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). The Examiner
relies upon Hart for a disclosure of a phosphatized coating, Lindstrom for a
disclosure of an internal gallery, and JP ‘063 for a disclosure of a smoothly
profiled piston pin that tapers gradually from the distal ends to the center
portion (Ans. 3-5).
The Appellants argue that there is no motivation to combine JP ‘063
and Hart because Hart’s bushingless piston pin is diametrically opposed to
the JP ‘063 piston pin used with a bushing (Br. 19-20).
The motivation to combine the disclosures of JP ‘063 and Hart would
have been to obtain the benefits disclosed by Hart (col. 2, l. 62 – col. 3, l. 6;
col. 3, ll. 13-23) of using the disclosed coating rather than a bushing.
The Appellants argue that Hart discloses a phosphate coating having a
preferred thickness about 8.0 to 15.0 microns (col. 3, ll. 9-12), not a
thickness of between 2 and less than 8 microns (Br. 20-21).
The Appellants’ original Specification does not include a disclosure of
a thickness of less than 8 microns. That claim limitation was added by
amendment (filed November 16, 2004). The original Specification discloses
“a thickness between two and eight microns” (¶¶ 0012, 0041; original claim

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1). Thus, when the Appellants’ claims are given their broadest reasonable
interpretation in view of the Appellants’ original Specification, “less than 8”
includes values that are less than but essentially 8 and, therefore, clearly
within Hart’s “about 8.0” (col. 3, l. 12).
The Appellants argue that “Uehara et al. ‘518 provides support for
Applicants’ position that different coating thicknesses provide different
properties. (See Uehara et al. ‘518, Column 2, Lines 57-63)” (Br. 21).
That portion of Uehara discloses:
The thickness of the phosphate coating may be increased, but the
improvement in rust preventive performance becomes saturated when
the thickness of the phosphate coating reaches about 10 µm. Thus, the
thickness of the phosphate coating is adjusted to a maximum of about
8 µm, preferably about 2 to 8 µm, in view of rust preventive
performance in the present invention.

Uehara’s disclosure of a thickness range of up to 10 µm clearly would not
have discouraged one of ordinary skill in the art from using the lower end of
Hart’s preferred thickness range, i.e., about 8.0 µm (col. 3, l. 12).
The Appellants argue that a coating thickness of 8 to 15 microns at the
small end of a connecting rod would cause wear, vibration, engine noise and
reduced engine reliability (Br. 21-22).
The Appellants’ argument is mere unsupported attorney argument,
and arguments of counsel cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, as pointed out
above, the Appellants’ thickness of less than 8 microns includes values
within Hart’s “about 8.0 µm” (col. 3, l. 12). Thus, at least at that thickness,
the Appellants are arguing a distinction that does not exist.

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We therefore are not persuaded of reversible error in the rejection of
claims 1, 2, 4-8, 11-13, 15 and 16.
Rejection of claims 3, 9 and 18-20 over
JP ‘063 in view of Hart and Lindstrom
Lindstrom discloses “lubrication systems for the connecting rod,
piston, and wrist pin of a hermetic compressor” (col. 1, ll. 8-9). The
connecting rod (42) has a central port (66) (which corresponds to the
Appellants’ internal gallery (67, fig. 2)) through which oil is pumped to the
wrist pin (46) (col. 3, ll. 50-52; col. 4, ll. 14-16; fig. 1).
The Appellants argue that Lindstrom bears no relation to the
combination of a smoothly profiled piston pin and a bushingless connecting
rod including a phosphatized coating for use in an internal combustion
engine (Br. 22).
The Examiner argues that it would have been obvious to one of
ordinary skill in the art to use Lindstrom’s central port 66 in the connecting
rod of the JP ‘063/Hart combination to facilitate lubrication of the piston pin
(Ans. 5). That argument is plausible and the Appellants have not explained
why it is in error.
Hence, the Appellants have not persuaded us of reversible error in the
rejection of claims 3, 9 and 18-20.
Rejections of claims 10 and 14 over JP ‘063
in view of Hart and Fangman and claim 17
over JP ‘063 in view of Hart and DeBiasse

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The Appellants merely argue that Fangman and DeBiasse do not
remedy the deficiencies in JP ‘063 and Hart argued by the Appellants as
discussed above (Br. 13-14).1
As pointed out above, those deficiencies do not exist. Hence, the
Appellants have not convinced us of reversible error in the rejections of
claims 10, 14 and 17.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 2, 4-8, 11-13, 15
and 16 over JP ‘063 in view of Hart, claims 3, 9 and 18-20 over JP ‘063 in
view of Hart and Lindstrom, claims 10 and 14 over JP ‘063 in view of Hart
and Fangman, and claim 17 over JP ‘063 in view of Hart and DeBiasse are
affirmed.

1 The Appellants’ argument that Fangman and DeBiasse do not disclose the
internal gallery in claim 18 (Br. 13-14) is irrelevant because Fangman and
DeBiasse are not applied to that claim.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

vsh

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